Trials@uspto.gov
`571.272.7822
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` Paper No. 8
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` Entered: September 5, 2018
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BEDRA, INC., BERKENHOFF GMBH,
`and POWERWAY GROUP CO. LTD.,
`Petitioner,
`v.
`SEONG, KI CHUL,
`Patent Owner.
`____________
`
`Case IPR2018-00666
`Patent 6,306,523 B1
`____________
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`
`
` Paper No. 8
`
` Entered: September 5, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BEDRA, INC., BERKENHOFF GMBH,
`and POWERWAY GROUP CO. LTD.,
`Petitioner,
`v.
`SEONG, KI CHUL,
`Patent Owner.
`____________
`
`Case IPR2018-00666
`Patent 6,306,523 B1
`____________
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`IPR2018-00666
`Patent 6,306,523 B1
`
`
` INTRODUCTION
`Berkenhoff GmbH, Bedra, Inc., and Powerway Group Co., Ltd.
`(collectively, “Petitioner”) filed a Petition requesting an inter partes review
`of claims 1–18 of U.S. Patent No. 6,306,523 B1 (Ex. 1001, “the ’523
`patent”). Paper 2 (“Pet.”). Seong, Ki Chul1 (“Patent Owner”) filed a
`Preliminary Response to the Petition. Paper 7 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” After considering the Petition, the
`Preliminary Response, and the evidence currently of record, we determine
`that Petitioner has not demonstrated a reasonable likelihood that it would
`prevail with respect to at least one of the claims challenged in the Petition.
`Accordingly, we do not institute an inter partes review.
`Related Proceedings
`A.
`The parties represent that the ’523 patent is involved in Ki Chul Seong
`v. BEDRA, Inc., Case No. 1:18-cv-00396 (N.D. Ill.). Pet. 8; Paper 4, 3. In
`addition, the ’523 patent previously was challenged by a different petitioner
`in IPR2016-00763. Pet. 1–4.
`The ’523 Patent
`B.
`
`The ’523 patent, titled “Method of Manufacturing Porous Electrode
`Wire for Electric Discharge Machining and Structure of the Electrode Wire,”
`issued on October 23, 2001, and claims priority, ultimately, to a Korean
`application filed July 30, 1997. Ex. 1001, at [54], [45], [30]. The ’523
`
`
`1 Variously spelled “Sung, Ki Chul” and “Ki Chul Song.” Prelim. Resp. 1;
`Paper 4, 3.
`
`2
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`patent “relates to a porous electrode wire for use in electrical discharge
`machining and the method of manufacturing the same.” Id. at [57]. The
`patent describes electrical discharge machining of a work piece as “melting
`the work piece during the arc discharge” created by applying a “high
`frequency voltage” between an “electrode wire” and a “start hole” in the
`work piece, along with “removing the machining particles using a machining
`liquid and an instantaneous vaporization power between the wire and the
`work piece.” Id. at 1:20–33.
`The invention of the ’523 patent is described as having the purposes
`of improving machining speed “by increasing the surface area of the wire
`which will be in contact with cooling liquid” and “by allowing the contact of
`the cooling liquid not only with the surface of the wire but also with inner
`part of the wire,” and providing a coated wire “with improved flushability
`without decreasing the machining accuracy.” Id. at 3:23–39. The patent
`describes achieving these purposes by “hot dip galvanizing” a wire made of
`a first metal by “passing the wire . . . through a molten [bath] of a second
`metal . . . thereby forming an alloy layer by the diffusion reaction between
`the first metal and the second metal . . . and a coating layer made of the
`second metal.” Id. at 3:39–49. The patent also describes drawing this wire
`to a new diameter, “thereby forming cracks in the alloy layer and the coating
`layer.” Id. at 3:51–53. The first metal “may use copper or brass having 63–
`67 wt % copper and 33–37 wt % zinc.” Id. at 3:54–55. The second metal
`“may use zinc, aluminum or tin.” Id. at 3:55–56.
`Challenged Claims
`C.
`Claim 1 recites:
`1. A method of manufacturing a coated electrode wire for use in
`electrical discharge machining comprising:
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`providing an intermediate wire having a first diameter and
`made of a first metal including copper;
`hot dip galvanizing the intermediate wire through a molten bath
`of a second metal having vaporization temperature lower
`than the first metal for a desired time and temperature,
`wherein an alloy layer is formed on the intermediate wire
`by diffusion reaction of the first metal and the second
`metal, having hardness higher and lower elongation than
`the first metal and second metal, and wherein a coating
`layer is formed on the alloy layer; and
`drawing the intermediate wire having the alloy layer and the
`coating layer to form a coated electrode wire having a
`second diameter, wherein cracks are formed during the
`drawing step in the alloy layer and the coating layer due
`to the high hardness and low elongation.
`
`
`Ex. 1001, 7:6–23. Claims 2–13 depend directly or indirectly from claim 1.
`Independent claim 14 is drawn to an electrode wire; claims 15–18 depend
`directly or indirectly from claim 14.
`The Asserted Grounds of Unpatentability
`D.
`Petitioner challenges claims 1–18 of the ’523 patent on three grounds
`(Pet. 32):
`References
`Tomalin2 and Tominaga3
`Tomalin, Tominaga, and
`Mukherjee4
`Mukherjee and Briffod I5
`
`
`Claim(s) Challenged
`1 and 3–18
`2
`
`Basis
`§ 103(a)
`§ 103(a)
`
`§ 103(a)
`
`1–18
`
`
`2 U.S. Patent No. 5,945,010, issued Aug. 31, 1999 (Ex. 1009, “Tomalin”).
`3 U.S. Patent No. 4,686,153, issued Aug. 11, 1987 (Ex. 1014, “Tominaga”).
`4 U.S. Patent No. 5,808,262, issued Sept. 15, 1998 (Ex. 1005, “Mukherjee”).
`5 U.S. Patent No. 5,196,665, issued Mar. 23, 1993 (Ex. 1015, “Briffod I”).
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`Petitioner relies on a declaration from Dr. Dandridge Tomalin.
`Ex. 1004. Patent Owner relies on a declaration from Dr. Sya Ensha, Ph.D.
`Ex. 2009.
`
` ANALYSIS
`
`A.
`
`Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable constructions in light of
`the specification of the patent in which they appear. See 37 C.F.R.
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016) (upholding the use of the broadest reasonable interpretation
`standard). Under the broadest reasonable construction standard, claim terms
`are presumed to have their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). Only terms which are in controversy need to be construed, and then
`only to the extent necessary to resolve the controversy. See Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (“we need only construe terms ‘that are in controversy,
`and only to the extent necessary to resolve the controversy.’”)).
`The only claim term whose meaning is in dispute is the term “cracks”
`that appears in independent claims 1 and 14. Pet. 33–34; Prelim. Resp. 10–
`12. Patent Owner argues that this phrase should be given its dictionary
`definition, “narrow breaks.” Prelim. Resp. 11–12. Petitioner argues that
`“[t]he ’523 patent does not limit the description of ‘cracks’ to any specific
`structure or configuration,” so it would be inappropriate to interpret “cracks”
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`as limited to “narrow breaks.” Pet. 34. Instead, Petitioner argues that
`“cracks” should be construed as “porous structures on the wire surface”
`because the ’523 patent “describes the ‘cracks’ synonymously with ‘porous’
`‘spongy-like’ surface structures.” Id. (citing Ex. 1001, at [54], [57], 1:14–
`18, 3:33–35, 4:25–28, 44–45, 50–54, 59–60, 5:17–18, 5:23–31, 6:5–11.).
`On the present record, we are persuaded that Patent Owner’s
`construction is correct. Although it is true that the ’523 patent describes
`“produc[ing] uniform cracks in the coating layer and the alloy layer to form
`a porous structure on the surface,” Ex. 1001, 6:42–44, it is not clear on the
`present record that this necessarily means the cracks themselves are the
`surface pores. Instead, “the porous nature of the wire” merely “arises from
`the cracks in the alloy layer and the coating layer.” Id. at 4:26–28 (emphasis
`added). Thus, the ’523 patent does not necessarily treat the cracks as
`synonymous with the pores; it also may allow the creation of pores merely
`as a result of the creation of separate cracks.
`In addition, the ’523 patent places restrictions on the shape of cracks
`that are more consistent with Patent Owner’s proposed construction than
`with that proposed by Petitioner. The ’523 patent consistently describes the
`cracks as directional and oriented perpendicular to the length of the wire. Id.
`at 4:14–16 (“the alloy layer includes cracks having a direction perpendicular
`to the longitudinal direction of the wire”), 5:67–6:2 (the “crack propagation
`direction is approximately perpendicular to the longitudinal direction of the
`wire”), 6:44–47 (“These cracks are propagated through the grain boundary
`of the coating layer and the direction of the propagation is perpendicular to
`the longitudinal direction of the wire”). Interpreting “crack” as synonymous
`with “pore,” which refers to any small hole or opening without any limit on
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`shape, Ex. 2004, is inconsistent with the description of cracks in the ’523
`patent as directional. Far more consistent with this description is Patent
`Owner’s proposed construction of “cracks” as “narrow breaks.”
`B. Grounds Based on Tomalin
`Petitioner argues that claims 1 and 3–18 are unpatentable as obvious
`over the combination of Tomalin and Tominaga, and that claim 2 is
`unpatentable as obvious over the combination of Tomalin, Tominaga, and
`Mukherjee. Pet. 35–51. Both of these asserted grounds depend on whether
`Tomalin is prior art under 35 U.S.C. § 102(a) or § 103(a), as Petitioner
`alleges. Patent Owner argues that Tomalin is not prior art to the ’523 patent,
`because the ’523 patent is entitled to a priority date of July 30, 1997, the
`filing date of the Korean application from which the ’523 patent claims
`priority.6 Prelim. Resp. 21–33 (citing Ex. 10137). Petitioner argues that
`the ’523 patent should not benefit from the filing date of the Korean
`application because the Korean application does not provide written-
`description support for the claims of the ’523 patent. Pet. 15–25.
`Specifically, Petitioner argues that the Korean application does not describe
`the cracks through both an alloy layer and a coating layer that are a
`limitation of every challenged claim. Id.; see Ex. 1001, 7:22–23 (claim 1,
`reciting “cracks are formed during the drawing step in the alloy layer and the
`coating layer”), 8:25–26 (claim 14, reciting “cracks are formed in the alloy
`layer and the coating layer”).
`Under 35 U.S.C. § 119, “the claims set forth in a United States
`application are entitled to the benefit of a foreign priority date if the
`
`6 Tomalin’s filing date is September 2, 1997.
`7 Korean Patent Application 97/36214, filed July 30, 1997 (“Korean
`application”).
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`corresponding foreign application supports the claims in the manner required
`by [35 U.S.C. §] 112.” In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989).
`In other words, for the ’523 patent to be entitled to the priority date of the
`Korean application, the Korean application must “contain a written
`description of the invention, and of the manner and process of making and
`using it, in such full, clear, concise, and exact terms as to enable any person
`skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same.” 35 U.S.C. § 112(a). The question
`Petitioner presents here is whether the Korean application adequately
`describes the presence of an alloy layer with cracks formed in the alloy layer
`and the coating layer as recited in the challenged claims.
`Petitioner argues that the Korean application does not provide such a
`description, because it “only discloses cracks within the ‘coating layer’ and
`not within any ‘alloy layer.’” Pet. 21 (citing Ex. 1013, 6, 7, Figs. 2a1, 2a2,
`2b) (emphasis in original). But the Korean application describes the
`“coating layer” as comprising two sub-layers, one of which is the outer zinc
`coating layer of the ’523 patent and the other of which is the inner copper-
`zinc alloy layer of the ’523 patent. Ex. 1013, 7 (“The zinc layer and the
`copper-zinc alloy layer are dense coating layers.”); compare Ex. 1013, Fig. 3
`(depicting a core, alloy layers, and a zinc layer), with Ex. 1001, Fig. 3b
`(depicting a core, an alloy layer, and a zinc layer). Thus, on the present
`record, the Korean application’s description of cracks in the “coating layer”
`does not necessarily mean that those cracks are confined to the outer zinc
`layer and fail to reach the inner alloy layer.
`Petitioner also argues that, to the extent the Korean application is
`susceptible to two different interpretations, this is insufficient to meet the
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`written-description requirement. Pet. 22–24 (citing Hyatt v. Boone, 146
`F.3d 1348, 1353–54 (Fed. Cir. 1998); Goeddel v. Sugano, 617 F.3d 1350
`(Fed. Cir. 2010)). At least on the present record, we disagree with Petitioner
`that two interpretations of the Korean application are possible. First, the
`evidence of record shows that both the outer zinc layer and the underlying
`alloy layer would crack when subjected to the process of the Korean
`application. The outermost portion of the alloy layer is made of a copper-
`zinc alloy with “a weight ratio of 45:55.” Ex. 1013, 7. According to
`Dr. Tomalin, this is “a mixed portion of beta/gamma brass.” Ex. 1004 ¶ 51.
`Gamma-phase brass “crack[s] under cold drawing.” Id. ¶ 29 (citing
`Ex. 1007 ¶¶ 7, 8, 18). Beta-phase brass “may not crack.” Id. (citing
`Ex. 1007 ¶ 12). The Korean application describes cooling the coated wire
`before drawing it, which is cold drawing. Ex. 1013, 7 (“the hot-dip zinc
`coated intermediate wire rod is cooled in the air and then drawn to a thin
`wire having a required diameter”); see Ex. 1004 ¶ 55 (describing the process
`of the Korean application as “cold drawing”). Thus, the wire in the Korean
`application is subjected to a process that will cause some of the outermost
`portion of the alloy layer to crack and that may cause the remainder of that
`portion of the alloy layer to crack. The most likely result of this is the
`creation of cracks in the alloy layer and the coating layer.
`We need not speculate, however, about whether cracks will form in
`the alloy layer of the wire described in the Korean application. Figure 2a2
`of the Korean application depicts “a cross-section of a porous electrode
`wire” that was made “according to the present invention.” Ex. 1013, 6. In
`the wire shown in Figure 2a2, there is “a core 11 formed of a metal and a
`coating layer 12 surrounding the core 11.” Id. As discussed above, the
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`“coating layer” is in reality two or more sub-layers, where the outermost
`layer is made of zinc and the underlying layers are copper-zinc alloys. Id.
`at 7. The coating layer in Figure 2a2 has cracks that penetrate from the
`surface of the wire all the way to the surface of the core. Ex. 1013, Fig. 2a2.
`Accordingly, those cracks pass through the transition between the zinc outer
`sub-layer and the alloy sub-layer underneath. Thus, in a wire made
`according to the invention of the Korean application, there are cracks in the
`alloy layer and the coating layer—indeed, all the way through the alloy
`layer.
`
`On the present record, the Korean application provides adequate
`written-description support for the “cracks” that are “formed in the alloy
`layer and the coating layer” limitation of the challenged claims. Because
`Petitioner has not argued, much less shown, any additional issues with
`the ’523 patent being entitled to the priority date of the Korean application,
`we conclude that the ’523 patent is so entitled and that Tomalin is not prior
`art to the ’523 patent under either 35 U.S.C. §§ 102(a) or 103(a). Because
`the grounds relying on Tomalin require Tomalin to be prior art, we
`determine that Petitioner has not shown a reasonable likelihood that it would
`prevail in showing that any challenged claim of the ’523 patent is
`unpatentable on any ground relying on Tomalin.
`Asserted Obviousness over Mukherjee and Briffod I
`C.
`Petitioner argues that the subject matter of claims 1–18 would have
`been obvious to a person of ordinary skill in the art given the teachings of
`Mukherjee and Briffod I. Pet. 51–64.
`i. Mukherjee
`Mukherjee relates to a “process of manufacturing [a] spark erosion
`electrode . . . for use in electrical discharge machining, the core of the
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`electrode being of comparatively low zinc alpha brass with top layer of
`highly rich zinc beta and [gamma] brass.” Ex. 1005, at [57]. Mukherjee
`discloses using a core wire made from brass containing 61.5% copper. Id.
`at 6:17, 6:39. It also discloses coating this wire with zinc. Id. at 6:37–38.
`In Mukherjee, the zinc-coated brass wire is drawn “at a reduction of more
`than 94.3% in area.” Id. at 6:58–65. Both before and after this drawing
`step, Mukherjee discloses annealing the wire, with the second annealing step
`disclosed as causing the “top layer [of] zinc [to] further penetrate[] towards
`the core.” Id. at 6:49–57, 6:66–7:5. After the first annealing step, but before
`the drawing and second annealing steps, Mukherjee discloses that the
`“Kirkendal effect” causes the zinc coating to “transform[] to β- and α-brass.”
`Id. at 7:43–48. Petitioner argues that the transformation is to “β-and γ-
`brass” and that “β- and α-brass” is a typographical error. Pet. 27 n.3. For
`purposes of this decision, we treat Mukherjee as though it discloses a
`transformation to “β-and γ-brass,” as Petitioner argues it does.
`ii. Briffod I
`Briffod I relates to a “wire electrode for electro-erosion cutting
`consisting of a core of electrically conductive material” that “is covered with
`a film of multiple fine layers,” which “may be diffused into one another in
`order to provide alloys of desired structure and composition.” Ex. 1015,
`at [57]. The core wire of Briffod I may be made of copper or brass. Id.
`at 4:23–26. Briffod I discusses a “laminated wire made from a layer of zinc
`deposited on a layer of copper or brass.” Id. at 2:42–50. In such a wire,
`“[a]lloys become increasingly enriched in zinc from the core to the surface.
`This gives a succession of layers of variable properties along the wire radius,
`as each phase of the brass has different properties.” Id. According to
`Briffod I, gamma-phase brass made according to this method and having
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`“approximately 60–70% zinc” is “an extremely fragile phase, with an
`attendant risk of rupture if the layer exceeds a few microns.” Id. at 2:61–65.
`This is in contrast to beta- and alpha-phase brass, which “have satisfactory
`mechanical properties.” Id. at 2:65–67. There is also a benefit to gamma-
`phase brass, though: as a phase containing a relatively high amount of zinc,
`it has more of a heat shield effect than alpha- and beta-phase brass do. Id.
`at 2:67–3:2. Briffod I teaches that the advantages of using gamma-phase
`brass can be obtained without causing the disadvantageous risk of rupture,
`by depositing zinc and copper “alternately in multiple fine layers,” then
`heat-treating the wire to produce various brass phases throughout the wire’s
`diameter, allowing the production of thin layers of gamma-phase brass that
`“are fairly flexible offering satisfactory mechanical strength and breaking
`strength,” as well as “high electro-erosion wear resistance.” Id. at 3:12–23.
`Producing a wire in this way allows cold drawing of the wire, which
`produces “savings in time, space and installation and energy costs” that “are
`obvious.” Id. at 5:21–26.
`iii. Analysis
`Petitioner argues that all limitations of claims 1–18 are taught or
`suggested by the combination of Mukherjee and Briffod I, and that a person
`of ordinary skill in the art would have had a reason to combine the teachings
`of Mukherjee with those of Briffod I. Pet. 51–64. Patent Owner argues that
`a person of ordinary skill in the art would not have used the teachings of
`Briffod I to produce the wire of the challenged claims, because those claims
`require cracks in an alloy layer, and Briffod I teaches away from producing
`such cracks. Prelim. Resp. 33–36. We agree with Patent Owner.
`As discussed above, claim 1 of the ’523 patent recites a limitation
`requiring the electrode wire to have an alloy layer and a coating layer
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`wherein “cracks are formed during the drawing step in the alloy layer and
`the coating layer.” Ex. 1001, 7:19–23. Claim 14 of the ’523 patent recites a
`limitation requiring the electrode wire to have an alloy layer and a coating
`layer, “wherein cracks are formed in the alloy layer and the coating layer.”
`Id. at 8:18–26. All of the other challenged claims depend directly or
`indirectly from claim 1 or claim 14 and, therefore, contain these limitations
`as well. 37 C.F.R. § 1.75(c). Petitioner does not rely on Mukherjee to teach
`or suggest the recited “cracks,” because, according to Petitioner, Mukherjee
`“only explicitly discloses cracks in the surface coating layer and does not
`explicitly disclose ‘cracks’ in an alloy layer resulting from a drawing
`process.” Pet. 52 (citing Ex. 1005, 4:56–63). Instead, Petitioner relies on
`Briffod I to disclose “cracks in an alloy layer via cold drawing gamma
`brass.” Id. (citing Ex. 1015, 2:67–3:2, 3:17–24, 5:21–26). Specifically,
`Petitioner relies on Briffod I’s statement that gamma-phase brass will
`“rupture if the layer exceeds a few microns.” Id. (citing Ex. 1015, 2:61–67).
`Thus, Petitioner equates Briffod I’s “rupture” of the gamma-phase
`brass with the “cracks . . . in the alloy layer” required by the challenged
`claims. Setting aside the issue of whether a “rupture” is indeed a “crack,” an
`issue on which the parties disagree, Petitioner does not make clear why a
`person of ordinary skill in the art would have been motivated to process
`Mukherjee’s wire in a way that would produce Briffod I’s “rupture.”
`Petitioner argues that a person of ordinary skill in the art would have been
`motivated to achieve the benefits of Briffod I: savings in time and space, as
`well as installation and energy costs, plus improved heat shielding and
`electro-erosion wear resistance due to the presence of a gamma-phase brass
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`coating on the electrode wire. Pet. 54 (citing Ex. 1015, 2:67–3:2, 3:17–24,
`5:21–26).
`But these advantages ignore the way in which Briffod I disparages
`Mukherjee’s method and the ruptures it might cause. When Briffod I says
`that gamma-phase brass “is an extremely fragile phase” and has a “risk of
`rupture,” it is discussing “the example above of a wire consisting of layers of
`copper and zinc.” Ex. 1015, 2:61–65. The example to which Briffod I
`refers is a “laminated wire made from a layer of zinc deposited on a layer of
`copper or brass,” causing “strata” to develop, each “corresponding to the
`different phases of the brass.” Id. at 2:42–46. These “[a]lloys become
`increasingly enriched in zinc from the core to the surface.” Id. at 2:46–48.
`This is Mukherjee’s process. Ex. 1005, 6:17–7:48. And Briffod I describes
`this process as producing a gamma-phase brass layer that has a “risk of
`rupture,” language that suggests that a person of ordinary skill in the art
`would interpret Briffod I as stating that obtaining such a rupture is not a
`good idea. Ex. 1015, 2:61–65. Moreover, Briffod I contrasts the rupture-
`prone gamma-phase brass layer with layers made of other brass phases that
`“have satisfactory mechanical properties.” Id. at 2:65–67. This suggests
`that the gamma-phase brass is unsatisfactory. Briffod I also describes the
`tendency of thick layers of gamma-phase brass to rupture as a
`“disadvantage.” Id. at 3:17–18.
`Taken together, all of this language constitutes disparagement by
`Briffod I of producing a wire with a thick gamma-phase brass layer that is
`prone to rupturing. The disparagement is particularly clear given that
`Briffod I proposes a way of achieving the advantages of a gamma-phase
`brass coating layer without having to suffer the disadvantages: by creating
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`thin layers of gamma-phase brass rather than using a single thick layer on
`the outside of the wire. Ex. 1015, 3:12–23. Thus, the risk of rupture is not
`simply the price that must be paid for the improved heat shielding and
`electro-erosion wear resistance of a gamma-phase brass coating layer.
`Instead, according to Briffod I, rupture is a detrimental result that can and
`should be avoided.
`Given the way in which Briffod I disparages Mukherjee’s method of
`plating a brass wire with zinc and then heat-treating it to create a thick
`gamma-phase brass coating layer, and, given the lengths to which Briffod I
`goes to explain how to avoid the results of following that method, we find
`that Briffod I teaches away from a combination with Mukherjee. In re
`Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a reference teaches away if it
`criticizes, discredits, or otherwise discourages the claimed solution). At the
`very least, the language of Briffod I certainly discourages the creation of
`both the thick gamma-phase brass layer of Mukherjee and the cracks in the
`coating layer and the alloy layer that are required by the challenged claims.
`The mere fact that Briffod I teaches some benefits that can be obtained by
`using a thin, non-ruptured, gamma-phase brass coating layer does not mean
`that the person of ordinary skill in the art would ignore Briffod I’s warning
`about using a thick, rupture-prone coating layer of gamma-phase brass.
`Thus, Petitioner’s identification of the benefits of Briffod I’s thin layer is
`insufficient to demonstrate that a person of ordinary skill in the art would
`have been motivated to combine Briffod I and Mukherjee in a way that
`would have resulted in obtaining the ruptures of Briffod I in the wire of
`Mukherjee.
`
`15
`
`
`
`IPR2018-00666
`Patent 6,306,523 B1
`
`
`For the foregoing reasons, Petitioner has not established a reasonable
`likelihood of prevailing in showing the obviousness of claims 1–18 over
`Mukherjee and Briffod I.
`
` CONCLUSION
`Upon consideration of the Petition, the Preliminary Response, and the
`evidence before us, we determine that Petitioner has not demonstrated a
`reasonable likelihood that it would prevail in showing that any challenged
`claim of the ’523 patent is unpatentable on any of the grounds asserted in the
`Petition. Accordingly, we do not institute inter partes review on any of
`Petitioner’s asserted grounds.
`
` ORDER
`
`It is hereby
`ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied,
`and no inter partes review is instituted.
`
`
`
`16
`
`
`
`IPR2018-00666
`Patent 6,306,523 B1
`
`
`FOR PETITIONER:
`Reginald J. Hill
`Benjamin J. Bradford
`Ian M. Moodie
`JENNER & BLOCK LLP
`rhill@jenner.com
`bbradford@jenner.com
`imoodie@jenner.com
`
`FOR PATENT OWNER:
`John K. Park
`PARK LAW FIRM
`park@parklaw.com
`
`17
`
`
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